Orinoco Iron, C.A. v Iron Carbide Holdings Limited - [2004] APO 30

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 725744 in the name of ORINOCO IRON, C.A.

Title: Fluidized Bed Process for the Production of Iron Carbide

Action: Opposition by IRON CARBIDE HOLDINGS under section 59 of the Patents Act 1990

Decision: Issued 25 November 2004.
Abstract

The opponent raised grounds of novelty, inventive step, and section 40/fair basis, which matters were also pursued at the hearing. By virtue of an amended statement of grounds and particulars allowed on 25 August 2004 the ground of lack of utility was included (as permitted by regulation 5.9A which came into force on 16 August 2004).
The invention is a process for the production of iron carbide particles which involved reduction and carburization of iron ore particles in different zones within the same reactor with a separate supply of reducing gas to the reactor and a separate supply of carburizing gas to the carburizing zone within the reactor. Under section 40 issues of fair basis, lack of clarity and sufficiency were raised. In particular the opponent claimed that several essential features were omitted from the claims. After a proper construction of the specification and claims and review of the evidence, the opposed application was found to comply with the requirements of section 40. In the matter of utility the opponent was unable to establish that the claims were deficient. Further, no laboratory/pilot plant results were provided to show that the invention did not provide the results claimed.
Two citations were raised against novelty (and inventive step) but none of them disclosed the combination of features which required that reduction and carburization be carried out in separate zones within the same reactor and with separate gas feeds. The opposed invention was also found not to be lacking an inventive step in light of either one of the citations when considered individually or when combined with the common general knowledge.
As the opponent was unsuccessful on all grounds, costs were awarded in accordance with Schedule 8 against the opponent Iron Carbide Holdings Ltd and in favour of the applicant Orinoco Iron, C.A.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 725744 by ORINOCO IRON, C.A. and an opposition under section 59 of the Patents Act 1990 by IRON CARBIDE HOLDINGS LIMITED.

BACKGROUND

Orinoco Iron, C.A. (henceforth Orinoco) filed patent application No. 725744 on 23 March 1999. The application claims convention priority from US 09/055859 filed in the United States of America on 6 April 1998. The application was examined and advertised accepted on 19 October 2000.
Iron Carbide Holdings Limited (henceforth ICH) filed a notice of opposition on 19 January 2001. A statement of grounds and particulars was filed on 19 April 2001. The service of evidence in support, evidence in answer, evidence in reply and further evidence was completed on 23 July 2004.
A hearing to deal with the substantive opposition was held in Perth on 6 August 2004. Kelvin Lord and Dr Mary Turonek, both patent attorneys of Lord & Company, Perth, represented the applicant. Richard Baddeley, patent attorney and Ashleigh Dickson, technical assistant, both of Watermark, Perth, represented the opponent.
An amendment of the Patents Act which came into force on 16 August 2004 made available the ground of lack of utility as a ground of opposition. By a request dated 19 August 2004 the opponent sought to amend the statement of ground of particulars to include the ground of lack of utility. By virtue of regulation 5.9A the amendment was allowed by a delegate of the Commissioner on 25 August 2004. Both parties were informed of the process to be followed by the Commissioner’s delegate and the filing of submissions relating to the ground of utility was completed on 13 October 2004.
EVIDENCE
Evidence in support consists of declarations made by:
·Richard Hiram Baddeley, dated 14 August 2001 and exhibits RHB-1 to 18. He states that he is the patent attorney representing the opponent in its opposition to the grant of Australian patent No. 725744. He provides a list of document exhibits which he says, the opponent will rely on in its opposition.
·Frank M Stephens Jr., dated 18 December 2001. He states that he is currently Chairman of the Board of ICH. He indicates that his experience in the field of metallurgy extended over a considerable period (twenty three years as a metallurgical researcher) and that he has particular interests in the fields of inorganic chemistry, pyrometallurgy, hydrometallurgy and minerals beneficiation. He further states that he is a fellow of the American Institute of Mining and Metallurgical Engineers and a member of the American Institute of Chemical Engineers and a registered professional engineer in the States of Ohio and Colorado.
Evidence in answer consists of a declaration made by:
· Oscar Dam G., dated 4 November 2002 and exhibits OD-1 to 4. He states that he is currently Vice President of Technology & Quality of Orinoco. He indicates that he has held high level positions as well as serving for twenty three years as a junior metallurgist. He states that he is a metallurgical engineer from Universidad Central de Venezuela with a M.Sc. in Met. Eng. from Imperial College, London UK and a PhD (Eng.) from the University of London, London UK; a member of the American Institute of Mining and Metallurgical Engineers; a member of the Institute of Metals London, UK; and a registered professional engineer in the Colegio de Ingenieros de Venezuela, Caracas Branch. He further states that his experience in the field of metallurgy extends over a considerable period and that he has particular interests in the fields of pyrometallurgy, hydrometallurgy and minerals beneficiation.
Evidence in reply consists of declarations made by:
· John Marshall Burgess, dated 22 October 2003 and exhibits JMB-1 to 4. He states that currently he is a Principal with Scena Consulting Pty. Ltd., Principal Consultant, DuPont Safety Resources and a professional chemical engineer with 33 years experience. He also states that he has a BE (Hons I) in Chemical Engineering, University of Newcastle, NSW, ME in Metallurgy, University of Newcastle, NSW and a PhD in Chemical engineering, University of Edinburgh, UK. He further states that he is a Chartered Professional Engineer, a Fellow of the Australian Academy of Technological Sciences and Engineering, a Fellow of the Institution of Chemical Engineers of the United Kingdom, a Fellow of the Institution of Engineers Australia.
· Frank M Stephens Jr., dated 5 August 2003 and exhibits FMS-1 to 5.
Further evidence consists of declarations made by:
·Oscar Dam G., dated 11 December 2003 and exhibits ODA-1 to 3.
·Frank M Stephens Jr., dated 27 May 2004 and exhibits FMS-6, 7.
·Oscar Dam G., dated 21 July 2004
THE SPECIFICATION
The specification indicates that the invention relates to a process for production of iron carbide and, more particularly, to a fluidized bed process for converting metal oxides containing iron into iron carbide. The specification then refers to prior art specifications and defects of the prior art. Several objects of the invention are stated. The primary object is stated as, “… to provide a process for converting iron oxides into iron carbide briquettes which are more easily transported and handled.” This is followed by the consistory statement of the invention, which is similar to claim 1. A detailed description of the invention (including embodiments) is then provided. The specification ends with 23 claims. The independent (1, 20) and omnibus claims (23), read as follows:
1. A process for conversion of iron oxide to iron carbide particles having a shell of ferrite material, wherein the ferrite material binds the particles together, comprising the steps of:
providing a fluidized bed reactor having a metallizing zone and a carburizing zone;
feeding iron oxide to said reactor;
feeding a reducing gas to said reactor so as to provide reduced iron in said metallizing zone; and
feeding a carburizing gas to said carburizing zone wherein said reducing gas and said carburizing gas are fed to said reactor so as to provide a ratio (CH₄+CO)/CO₂ of between about 9 and about 33, so as to provide a final iron carbide product in said carburizing zone having between about 2.2% wt and about 6.5 wt% carbon and at least about 91%wt iron.
20.A process for conversion of iron oxide to iron carbide, comprising the steps of:
providing a fluidized bed reactor having a metallizing zone and a carburizing zone, feeding iron oxide to said reactor; feeding a reducing gas to said reactor so as to provide reduced iron in said metallizing zone; and feeding a carburizing gas to said carburizing zone, so as to provide a final iron carbide product in said carburizing zone having between about 2.2% wt and about 6.5% wt carbon and at least about 80%wt iron wherein said iron carbide product is characterized iron carbide particles having a shell of ferrite material, wherein the ferrite material binds the particles together.
23.A process substantially as hereinbefore described with reference to any one of the accompanying Figures 1-4.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised grounds of novelty, inventive step, and section 40/fair basis, which matters were also pursued at the hearing. By virtue of an amended statement of grounds and particulars allowed on 25 August 2004 the ground of lack of utility was included (as permitted by regulation 5.9A which came into force on 16 August 2004).
DECISION
Both parties made written and oral submissions at the hearing (and subsequently written submissions) and I shall refer to those submissions wherever relevant in my decision.
Claims Construction, Section 40/Fair Basis
The opponent raised several issues and I shall deal with them on an individual basis.
Lack of Fair Basis
The opponent contended that independent claims 1 and 20 were not fairly based as they failed to embody a number of features. They identified features of, High Pressure Operation, Isobaric Operation, Single Gas Composition, and Inert Gas as essential features which were not present in these claims. They indicated that only claim 10 mentions pressure and that there is no mention of isobaric operation anywhere in the claims.
The applicant contended that some of these issues were related to sufficiency and utility matters. They submitted that the claims were fairly based and that all essential features had been claimed. They further submitted that the claims were clear and could be easily construed on a fair reading of the claim and with proper reference to the specification.
The opponent submitted that these features arose from the statements of the applicant’s declarant Dr. Dam. The opponent contended that Dr. Dam had indicated that these features were essential to the working of the invention and differentiated the opposed invention from the prior art.
High Pressure Operation, Isobaric Operation and Single Gas Composition
The issue of fair basis has been addressed by the Full court of the Federal Court in CCOM Pty Ltd v Jiejing Pty Ltd, 28 IPR 481 and (1994) AIPC 91-079. At 501 the Court stated:
“…Fullagar J emphasised that disclosure without claim is enough. Hence, it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the complete specification, or in the provisional specification, “essential integers” or “essential features” of an invention disclosed therein and to ask whether they correspond with the essential integers of the claim in question;…
Fullagar J also pointed out that the requirement of “fair basing” on matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification; rather, there must be “a real and reasonably clear disclosure”.
This view was adopted by the Full Court of the Federal Court in determining the issue of fair basing in CCOM v Jeijing (supra). Thus I have to determine if there has been a real a reasonably clear disclosure of the matter defined in the claims within the description. Looking at claim 1, the following features in combination define the process for which protection is sought:
1.A process for conversion of iron oxide to iron carbide particles,
2.Having a shell of ferrite material, wherein the ferrite material binds the particles together, comprising the steps of:
3.Providing a fluidized bed reactor having a metallizing zone and a carburizing zone;
4.Feeding iron oxide to said reactor;
5.Feeding a reducing gas to said reactor so as to provide reduced iron in said metallizing zone; and
6.Feeding a carburizing gas to said carburizing zone;
7.Wherein said reducing gas and said carburizing gas are fed to said reactor so as to provide a ratio (CH₄+CO)/CO₂ of between about 9 and about 33, so as to provide a final iron carbide product in said carburizing zone having between about 2.2% wt and about 6.5 wt% carbon and at least about 91%wt iron.
I note that this combination of features is disclosed in the description and in the consistory statement of the invention. The question of whether there has been a "real and reasonably clear disclosure" must be approached through the eyes of the person skilled in the art and bearing in mind the common general knowledge. There is no lack of clarity or ambiguity which calls for the opinion of the skilled addressee in this matter. The opponent has referred to the statements of the applicant’s declarant as referring to what the declarant considers as essential to the invention but in no way has this rendered the present claims as lacking in fair basis. I consider that the claims define a process which has a combination of features and there is a real and reasonably clear disclosure of this combination in the description.
Looking at the opposed description I note that the invention lies in the field of iron carbide production from iron oxide. The prior art identified therein (US Patent 5,387,274) relates to a low-pressure process using a single multi-zone reactor for converting iron oxide into iron carbide pellets. The opposed specification then states:
“The foregoing processes are important improvements in the industry. However, the need remains for further improvements for example for enhancing the transportability of iron carbide product and handling of same in steel shops.
It is therefore the primary object of the present invention to provide a process for converting iron oxides into iron carbide briquettes which are more easily transported and handled.”
Thus the claimed invention is an improvement on a prior art process. The consistory statement indicates that the improvement lies in “providing a fluidized bed reactor having a metallizing zone and a carburizing zone;…feeding a reducing gas to said reactor so as to provide reduced iron in said metallizing zone; and feeding a carburizing gas to said carburizing zone so as to provide a final iron carbide product…”.
The description then states:
“In further accordance with the present invention, the process is carried out at a high pressure using excess methane in the final carburization step so as to provide a desired amount of ferrite oxide and metallic iron in the final iron carbide product which serves as a binder material during briquetting procedures so as to provide briquettes having acceptable structural strength and breakdown index criteria without requiring additional added binders.”
This is followed by a detailed description of the invention which mentions features of, High Pressure Operation of the fluidized bed reactor(s) and Inert Gas usage for cooling the iron carbide product. However the description does not indicate that the feature of High Pressure Operation constitutes part of the invention. It has been identified as a preferred feature but nowhere is it stated to be essential to the working of the invention. There is no mention of Isobaric Operation or Single Gas Composition requirements in the description and thus they cannot be considered to constitute part of the invention.
The opponent’s submissions on these features were solely based on the second and third declarations of Dr. Dam., a declarant for the applicant. The opponent made reference to the teaching of Kitto J. in Sami S. Svendsen v Independent Products Canada Ltd 1A IPR 100. The opponent has compared Dr. Dam to the witness in that case. The witness in Sami S. Svendsen (supra) was the actual inventor. In this case we have an overseas declarant who is not the inventor of the opposed invention. Further there is no evidence (such as having worked/taught in Australia in the relevant field) to show that he is the skilled addressee in the relevant art in Australia. I note also that Dr. Dam did not refer to these features in his first declaration and only raised these matters in subsequent declarations as a counter to lack of novelty and inventive step arguments raised by the opponent. I do not find that in the circumstances Dr. Dam has established that these features are essential to the invention. I note that none of the other declarants have supported Dr. Dam’s findings on these alleged essential features of the opposed invention.
The claim clearly sets out the improvement over the prior art as residing in having separate zones for metallization and carburization within the same reactor and separate feed of carburizing gas to the carburizing zone and reducing gas to the reactor. This feature is defined in claim 1. The feature of high pressure is definitely required for the process to be carried out but the specification does not teach that it is an essential part of the invention. It is a feature which the skilled addressee can determine from a fair reading of the specification in order to work the invention but it is not part of the invention. None of the declarants have indicated that the specification does not teach the pressures to be used in the process. Further both the opponent’s declarants have indicated that the operating pressures are well known or could be determined routinely. The claims define the monopoly sought or what must not be done by others during the life of the patent (AMP v Utilux, (1971) 45 ALJR 123, British United Shoe Machinery Co. Ltd. v A. Fussell and Sons Ltd., (1908) 25 RPC 631). In the opposed application the monopoly sought has been clearly set out in the claims. The specification has provided a best method of performance to enable the skilled addressee to work in the invention. I find that the opposed claims do not lack fair basis by not defining features of High Pressure Operation, Isobaric Operation, and Single Gas Composition.
Briquetting
The opponent submitted that the opposed claims also lacked fair basis in that claims 1, 3-15, 18-20 and 22 fail to recite how the objects of the invention are achieved in relation to briquetting, as the claims, on a fair reading are of a broader scope. In support of this the opponent argued that in order to be fairly based, the claimed invention must have all the essential features the specification states are required to achieve the stated advantages of the invention: AMP v Utilux (1971) 45 ALJR 123, 131 (McTiernan J):
“If…patentee chooses or is compelled to state advantages of his invention, failure of a claim to embody any of the advantages claimed must result in the failure of the claim.”
And from Tioxide Group Services Ltd v Kerr McGee Corp and Anor [2000] APO 27 (31 March 2000)
“I consider that the claims need not define the objects of the invention as long as they define:
•          the features whereby the objects of the invention are achieved, OR
•          the result sought to be achieved wherein the ordinary skilled addressee is able to determine the relevant features (without exercising inventiveness) from the defined result (see No-Fume Ltd v Frank Pitchford and Co. Ltd., (1935) 52 RPC 231).”
From a fair reading of the specification one of the objects/advantage of the invention has been identified as:
“… to provide a process for converting iron oxides into iron carbide briquettes which are more easily transported and handled.”
The description indicates that this can be achieved by carrying out metallizing and carburizing in two separate zones but within the same reactor, wherein reducing gas is fed to the reactor (thus achieving metallizing of the iron oxide particles in the metallizing zone) and carburizing gas is fed to the carburizing zone. The detailed description at page 5 of the opposed application states the following:
·“…a process is provided for converting iron oxide fines containing iron into iron carbide which is ideally suited for briquetting so as to provide iron carbide which is more readily transported and handled.”
·“…iron carbide particles having a shell of iron oxide or metallized iron, preferably α-iron or ferrite, which advantageously serves as a binder during subsequent briquetting procedures…”
This is also stated at page 7 of the description. Thus the feature whereby the objects of the invention in relation to briquetting are achieved is clearly set out in the claims and description. The description has made clear that iron carbide particles with a ferrite shell achieve the objects of the invention in that they can easily be briquetted without a binder material as the ferrite shell acts as a binder material. I do not see that there is a specific requirement for the claim to define the step of briquetting as the skilled addressee can easily put this into practice without use of inventiveness. In fact the independent claims have clearly stated that the ferrite material binds the particles together, as shown below:
1.   Claim 1:- “A process for conversion of iron oxide to iron carbide particles having a shell of ferrite material, wherein the ferrite material binds the particles together…” (my emphasis).
2.   Claim 20:- “…wherein said iron carbide product is characterized iron carbide particles (sic) having a shell of ferrite material, wherein the ferrite material binds the particles together.” (my emphasis).
Though this does not constitute briquetting, it is a clear indication of the monopoly sought. The description has indicated that one of the objects is to carry out briquetting without use of binder and the particles provided by the invention achieve that object. I do not find that claims 1, 3-15, 18-20 and 22 lack fair basis with regard to defining the feature whereby the objects of the invention are achieved in relation to briquetting.
Multiple Fluidized Bed Operation

The opponent submitted that claims 1-12, 16-22 are silent as to how the object of multiple fluidized bed operation is achieved, hence these claims also lack fair basis. The opponent argued that in order to be fairly based, the claimed invention must have all the essential features the specification states are required to achieve the stated advantages of the invention. Reference was made to AMP v Utilux (Supra), Tioxide v Kerr McGee (supra) and No-Fume (supra).
From a fair reading of the specification one of the objects/advantage of the invention has been identified as:
“It is a still further object of the present invention to provide a process wherein conversion from iron oxides to iron carbide is carried out in multiple fluidized bed reactors.”
The description at page 9 discloses the use of multiple fluidized bed reactors as follows:
“Reactors 10-16 (10, 12, 14 and 16) in accordance with the present invention preferably are operated so as to define a pre-heating zone or bed, preferably in reactor 10, a series of reducing zones or beds in reactors 12 and 14, and a reducing bed or zone as well as a carburizing bed or zone in the final reactor 16 (my emphasis). Thus, reduction prior to introduction to the carburizing zone is carried out in a series of reduction zone portions in accordance with the present invention.”
The description at pages 9, 10 further discloses the arrangements of the metallizing and carburizing zones in the final reactor, and the separate feed of reducing gas and carburizing gas. Thus the description has disclosed how this object of the invention may be achieved. In AMP v Utilux, (1971) 45 ALJR 123 at page 128, McTiernan J. states:
"The description of the invention is not the definition of it. A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect."
Further, the full bench of the High Court indicated on appeal (see AMP v Utilux, (1974) 48 ALJR 17) that:
"the definition of any invention must be found in the claims read with the specification as a whole."
When read as a whole, the specification describes the invention as the placement of separate metallizing and carburizing zones with separate gas feeds within the same reactor. In particular the description indicates that as long as there is one reactor wherein the metallization and carburization occur in separate zones (and reducing gas is fed to that reactor to provide reduced iron in the metallizing zone and carburizing gas is fed to the carburizing zone in that reactor) other reactors may be added for the purposes of preheating and partial metallization. In terms of fair basis as per CCOM v Jeijing (supra) there is a real and reasonably clear disclosure of the matter of claims 1-12 and 16-22 in the description. As is clear from claim 13 the fluidized bed reactor defined in claim 1 may in fact comprise a plurality of reactors, so long as one reactor has within it a reducing zone and a carburizing zone which are separate from each other.
Thus one may conclude that to the skilled addressee, the claims have defined that there should be at least one reactor wherein metallization and carburization are carried out in separate zones within the same reactor. From a fair reading of the specification there is no indication that the invention will only work in or may only be practiced in either a single fluidized bed reactor or multiple fluidized bed reactors. None of the declarants have indicated that they are unable to practise the invention using single or multiple fluidized beds or that the invention will only work if single or multiple fluidized beds are used. The opponent’s declarants state the following:
1. Stephens states at paragraph 47 of his first declaration:
“There is nothing novel or inventive in separating the different zones of preheating, reduction and carburization into separate fluidized bed reactors as claimed in Orinoco’s claim 13 or into separate zones within the same reactor as claimed in Orinoco’s claim 12.
These are obvious design choices described in the prior art as a means of simplifying the process parameters in the production of iron carbide in a fluidized bed reactor.
2. Dr Burgess at paragraph 5, page 3 of his first declaration when stating the common general knowledge in Australia:
“that designs of fluidized beds for processing iron ores into iron carbide can vary considerably from single fluidized bed reactors, to a set of reactors in series, to a circulating fluidized bed coupled in sequence to a partitioned bubbling fluidized bed, to a single fluidized bed with internal baffles.”
Quite clearly the objective of operating the claimed process in multiple fluidized beds is one which can be achieved by the skilled addressee without the use of inventiveness. The claims have defined at least one reactor wherein metallization and carburization are carried out in separate zones within the same reactor. I do not find that claims 1-12 and 16-22 lack fair basis by not explicitly defining the use of multiple fluidized bed reactors.
Sufficiency & Lack of Fair Basis
Formation of the Ferrite Shell, and Inert Gas
The opponent submitted that, “The specification fails to teach the person skilled in the art how the formation of a ferrite shell on iron carbide particles occurs in the fluidised bed of the opposed application. Hence the application must fail for lack of sufficiency if, as is presumed, formation of the ferrite shell on iron carbide particles is essential to conduct of the invention because the person skilled in the art is not taught how this is achieved in a fluidised bed (Lahore; [15180], Kimberly-Clark v Arico (2001 50 IPR 513 at [25]). In any event, the specification is “misleading” (Sami S Svendsen, 106) to the extent that it teaches formation of a ferrite shell on iron carbide particles within the fluidised bed reactor when, on the balance of probabilities, this does not occur.”
With regard to the formation of the ferrite shell, the specification teaches the following:
Page 4: “…the process is carried out at a high pressure using excess methane in the final carburization step so as to provide a desired amount of ferrite oxide and metallic iron in the final iron carbide product which serves as a binder material during briquetting procedures so as to provide briquettes having acceptable structural strength and breakdown index criteria without requiring additional added binders.”
Page 5: “The process… involves utilizing a multiple-fluidized bed arrangement operating at a high pressure wherein oxide fines are pre-heated, reduced or metallized, and carburized so as to provide iron carbide particles having a shell of iron oxide or metallized iron, preferably α-iron or ferrite, which advantageously serves as a binder during subsequent briquetting procedures…”.
Page 7: “It has been found that by feeding carburizing gas to the dense phase, iron carbide particles can be provided which have a shell of iron oxide or metallized iron, most preferably alpha-iron or ferrite, which shell serves as a binder during briquetting procedures so as to adhere iron carbide particles together to form briquettes of sufficient mechanical strength and having acceptable resistance to attrition.”
Page 12: “…iron carbide particles from outlet 26 of reactor 16 are preferably subjected to a flow of inert carrier gas which advantageously serves to allow for control of the amount or thickness of the shell of ferrite material on such particles.
Claim 17. A process according to claim 16 comprising the step of subjecting said iron carbide particles to a flow of inert gas whereby an amount of said ferrite material in said shell can be controlled.
Claim 22. A process according to claim 20 or claim 21, further comprising the step of subjecting said iron carbide particles to a flow of inert gas whereby an amount of said ferrite material in said shell can be controlled.
The disclosures above teach that ferrite shell formation occurs in the carburization step in the fluidized bed. They also teach that the amount or thickness of the ferrite shell can be controlled by subjecting the iron carbide particles to a flow of inert gas.
The opponent’s declarant, Stephens in the evidence in support indicates that the formation of a ferrite shell is not novel. He states at paragraph 54 of his first declaration:
(a) It seems obvious that with reference to the process kinetics model, adding the metallized product to a separate reactor having a high methane gas concentration for a short period will create an alpha iron “shell” by the rapid metallization at the surface at a depth which would be restricted by the diffusion coefficient of the methane at the surface.
(b) The formation and depth of this shell could be predicted and controlled by reference to the model and is therefore not new or surprising but predictable and inherent in the control parameters including temperature, residence time and carburization gas.
The declarant for the applicant (Dr Dam, first declaration at para 19) indicates that ferrite shell formation is promoted by the treatment of iron carbide particles with inert gas (composition as specified in the description at page 12).
The opponent’s declarant, Dr Burgess, questions whether there is any ferrite shell formation in the carburizing step in the fluidized bed. He indicates that he is in agreement with Dr Dam that ferrite shell formation probably occurs as a result of treatment of the iron carbide particles with inert gas. He concludes by stating that, “…I speculate that the formation of a ferrite layer is achieved outside the fluidized bed when the iron carbide is subject to inert gas.”
Mr Stephens in his second declaration now challenges the formation of a ferrite shell. He states:
·The porous nature of the iron carbide particles produced from reduced hematite therefore do not lend themselves to the formation of shells of reaction products such as is inferred in the Orinoco Patent Application.
·The treatment described in the Orinoco patent would cause reaction products to form in the internal pores of the reduced and carburized material rather than at the surface.
None of the declarants have provided evidence based on an attempt to put the invention into practice. Dr Burgess and Mr Stephens have indicated that testing of the invention on a laboratory scale would not entail insurmountable problems/difficulties. Most statements have been based on individual understanding or assertions based on theoretical disclosures. None of the declarants have made a definite statement that the ferrite shell formation does not occur during carburization. They express some doubt about shell formation during carburization and speculate as to possible areas where formation might occur. One of the declarants went from saying that ferrite shell formation was well known during carburization to questioning if this was at all possible. Also, no evidence, based on an attempted working of the invention, has been forwarded to support the assertions. On the balance of probabilities I do not consider that the opponent has established that the teaching of the opposed specification is misleading or deficient regarding the formation of the ferrite shell. There is no evidence before me to show that the ferrite shell is formed outside the fluidized bed reactor in the defined process. I consider that the specification does not lack sufficiency in the matter of the feature of the ferrite shell formation via inert gas usage.
I shall now address the issue of fair basis of the claims regarding inert gas usage for ferrite shell formation. The opponent contended that independent claims 1 and 20 were not fairly based as they failed to embody the inventive idea with particular reference to the use of inert gas which promotes the formation of the ferrite shell outside the fluidized bed. I had previously determined that the specification did not lack sufficiency with regard to ferrite shell formation via inert gas usage. The opponent had been unable to establish that inert gas usage was required to provide iron carbide particles with a ferrite shell. Hence claims 1 and 20 do not lack fair basis in not defining the feature of inert gas usage to form a ferrite shell.
Clarity of Claims
The opponent raised several matters regarding clarity of the claims. I shall deal with them on an individual basis as set out below:
Occurrence of “about” to qualify ranges (claims 4-8, 10, 11, 14, 18-20).
Patent claims frequently contain terms that are imprecise. This does not give rise to an objection of lack of clarity if it is possible for a third party to ascertain whether or not an act he/she proposes to do would fall within the ambit of the claim. This is a practical determination, rather than a strictly literal exercise, and it is acceptable if there is minor uncertainty at the edges of a claim:
"The court will give little weight to puzzles which may arise 'at the edge of the claim' if those puzzles would not , as a practical matter, cause difficulty for the skilled addressee or manufacturer wishing to satisfy himself that what he proposes to do will not infringe that patent."
(Glaverbel SA v British Coal Corp, [1994] RPC 443 at 495)
I have no evidence before me to show that the use of the term “about” has caused the ambit of the claims to become uncertain. The opponent’s declarants have expressed no difficulty in this regard. I do not find that claims lack clarity by use of the term “about”.
Minor ambiguity in claim 20
The relevant portion of claim 20 is:
“…wherein said iron carbide product is characterized iron carbide particles having a shell of ferrite material,…”
The portion in bold type appears to be the area under attack. The Rules of Construction were reiterated by Shepherd J. in Decor Corp v Dart Industries 13 IPR 385. The rule relevant to this situation indicates that the specification is to be read as a whole. Consequently, the description is an aid to construing the claims, and vice versa.
However, it must be appreciated that the different parts of the specification have different functions, and so different weight can be given (for the purposes of construction) to information from different parts of the specification. (See Welch Perrin Co Pty Ltd v Worrel (1961-62) 106 CLR 588)
There are several consequences of this rule and the teaching relevant to the current situation is that, “If an expression in a claim is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.” (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 479).
The description discloses at page 5:
“The process… involves utilizing a multiple-fluidized bed arrangement operating at a high pressure wherein oxide fines are pre-heated, reduced or metallized, and carburized so as to provide iron carbide particles having a shell of iron oxide or metallized iron, preferably α-iron or ferrite, which advantageously serves as a binder during subsequent briquetting procedures…”.
Thus one can see that the monopoly sought is to an iron carbide product having a shell of ferrite material. Clearly, the intention of Claim 20 was to define:
“…wherein said iron carbide product is characterized (by) iron carbide particles having a shell of ferrite material,…”
Further, none of the declarants have expressed any difficulty with understanding claim 20. I find that claim 20 is not ambiguous or lacking in clarity.
I find that the opponent has not shown that the opposed claims lack fair basis and clarity. I also find that the opponent has not shown the opposed specification as lacking in sufficiency.
Utility
The opponent submitted that claims 1 to 23 of the opposed application are directed to an invention that is not useful or lacks utility thus offending against section 18(c) of the Patents Act. They contended that:
1. The claim construction requires that a ferrite shell be produced on iron carbide particles produced in a fluidised bed.
2. Following the directions of the patentee, the result of iron carbide particles having a ferrite shell, that ferrite shell being formed in the fluidized bed, cannot be produced by the skilled person. Therefore the invention as claimed lacks utility.
The opponent based their conclusion on the statements of Dr Burgess and Dr Dam which questioned the formation of the ferrite shell on iron carbide particles in the carburizing zone (as taught in the specification). They were of the opinion that the ferrite shell formed when the particles were subject to inert gas while being stored prior to being transported to a briquetting process. The opponent submitted that the requirement of utility (or avoidance of inutility) is summarised in Terrell on Patents, 13^th Edition, 5.39 at p106.
“Inutility, in the sense in which that word is used in modern patent law and practice, is concerned solely with the scope of the claim, and means that the claim covers a mechanism or process which is useless for the purposes indicated by the patentee i.e. which does not produce the result or one of the results claimed in the specification”
They also referred to the teaching of Valensi & Another v British Radio Corporation Ltd., [1973] RPC 337 at page 378.
The applicant agreed with the opponent’s claim construction requiring that a ferrite shell be produced on iron carbide particles produced in a fluidised bed, but refuted the opponent’s submissions that the opposed claims are directed to an invention which lacks utility. They submitted that:
·it is well acknowledged in the courts that a finding of lack of utility can only be made when it is clearly demonstrated that the claims when construed according to their natural meaning include substances or directions which were undesirable and ineffective for producing the result sought by the patentee.
·The applicant further stated that the opponent had not shown any evidence that it had even attempted to follow the directions of the claims and reproduce the process of the invention with laboratory equipment that is readily available to the opponent.
·The opponent has not shown any evidence that it has attempted to reproduce the process of the invention and failed to obtain the product as claimed by the specification.
·Its arguments against utility of the invention are based on mere opinion and speculation by Dr Burgess and have no factual basis.
In the Valensi case (supra), it was said that to prove inutility, it is necessary to show that an invention so far as claimed, will not work as described or with any modification which the addressee can properly be expected to make. On the other hand, if a proposed modification which would make the invention work as described, is one which the addressee of the specification cannot be expected to make, then the description in the specification is insufficient. The teaching from Valensi (supra) then states:
“We can therefore deal with the issue of inutility by answering the question: Is it established that any of the embodiments as described, or as modified in ways proposed in the evidence, would not be of use in the manner claimed? It is, as the judge pointed out, an obstacle to the success of the defendants on the issue of inutility that they never made any experiments to see if the embodiment would give a useful result. It would, of course, be possible for them to discharge the onus which was upon them without any experiments, but in our opinion they failed to do so.”
I have addressed this matter under Sufficiency & Lack of Fair Basis where I addressed sufficiency issues relating to the ferrite shell formation. None of the declarants have provided evidence based on an attempt to put the invention into practice. Dr Burgess and Mr Stephens have indicated that testing of the invention on a laboratory scale would not entail insurmountable problems/difficulties. Most statements have been based on individual understanding or assertions based on theoretical disclosures. None of the declarants have made a definite statement that the ferrite shell formation does not occur during carburization. They express some doubt about shell formation during carburization and speculate as to possible areas where formation might occur. One of the declarants went from saying that ferrite shell formation was well known during carburization to questioning if this was at all possible. Also, no evidence, based on an attempted working of the invention, has been forwarded to support the assertions. The onus is clearly on the opponent to prove their case. They have not shown that ferrite shell formation does not occur during the opposed process of iron carbide production either by convincing argument or by experimental means. I find that the invention as defined in claims 1 to 23 does not suffer from inutility.
Novelty

The opponent had raised several citations in support of the ground of lack of novelty in the statement of grounds and particulars. At the hearing they indicated that they would be addressing only two citations (both patent documents) with respect to lack of novelty. They stated that the citations disclosed all the essential features of the invention.
The applicant submitted that none of the references filed in the opponent’s evidence provided an enabling disclosure of the subject matter of the claims. They also submitted that none of these citations gave a requisite direction, or made a recommendation or suggestion which would result in the claimed invention if it was followed by the skilled addressee in the relevant area of iron carbide production.
Before I address the matter of novelty I note that the applicant had stated that the citations raised against novelty did not have verification of the dates on which they were made publicly available in Australia. The documents cited by the opponent form part of the prior art base and the Patents Act indicates that they need to provide the relevant information and they need to be publicly available, whether in or out of the patent area. The citations provided do have a publication date and appear to be copies of official documents. I note that the applicant has been in possession of this evidence for sometime but at no stage has it provided evidence challenging the publication date of these documents. In the absence of evidence from the applicant to the contrary I shall proceed to consider these documents as setting out publication dates that are prima facie valid.
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
Both parties did not show that any of the features of claim 1 were inessential to the working of the invention. I shall, therefore, begin by assuming that all features of the independent claim are essential (Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183):
1.   A process for conversion of iron oxide to iron carbide particles,
2.   Having a shell of ferrite material, wherein the ferrite material binds the particles together, comprising the steps of:
3.   Providing a fluidized bed reactor having a metallizing zone and a carburizing zone;
4.   Feeding iron oxide to said reactor;
5.   Feeding a reducing gas to said reactor so as to provide reduced iron in said metallizing zone; and
6.   Feeding a carburizing gas to said carburizing zone;
7.   Wherein said reducing gas and said carburizing gas are fed to said reactor so as to provide a ratio (CH₄+CO)/CO₂ of between about 9 and about 33,
8.   So as to provide a final iron carbide product in said carburizing zone having between about 2.2% wt and about 6.5 wt% carbon and at least about 91%wt iron.
The opponent had listed several documents under the ground of novelty under the statement of grounds and particulars. At the hearing they pursued only two documents, US 5,527,379 (exhibit RHB-7, showing a publication date of 18 June 1996) and AU 708326 (exhibit RHB-4, showing a publication date of 4 September 1997.
US 5,527,379 (exhibit RHB-7)
The opponent submitted that claim 1 lacked novelty in light of the citation when read in light of the common general knowledge (henceforth cgk) in Australia. They stated that most of the essential features of claim 1 had been explicitly disclosed in the citation, while features (as itemised above) 7, and 8 were implicitly disclosed when the citation was read in light of the cgk. Regarding the feature itemised at 2 the opponent submitted that the specification lacked sufficiency of disclosure relating to formation of a ferrite shell in a fluidized bed process. They also submitted that the applicant’s declarant did not confirm the essentiality of this feature, in contrast to others, in his evidence.
The applicant contended that the citation did not disclose the combination of features claimed in the opposed application. They noted that US 5,527,379 disclosed reduction and carburization being carried out in separate reactors.
US 5,527,379 discloses conversion of iron oxide to iron carbide in a two stage process. In the first stage a major part of the iron content of the charge is pre-reduced in a circulating fluidized bed system using a hot reducing gas in which the amount of reduced iron-containing solids circulated per hour is at least five times the weight of reduced iron-containing solids contained in the fluidized bed reactor. The reduced iron-containing solids from the first stage are supplied to a second stage conventional fluidized bed reactor wherein hot reducing gas is supplied as a fluidizing gas to remove the remaining oxygen content (reduction) and convert the iron content thereof to Fe₃C (carburization).
Thus the features of claims 1-12, 16-22, wherein reduction and carburization are carried out in separate zones within the same reactor (my emphasis) and the use of separate reducing and carburizing gas streams have not been disclosed. Also the invention of claim 13 defining multiple fluidized bed rectors wherein pre-heating and partial metallization are carried out in some of the reactors and final metallization and carburization is carried out in different zones in the final fluidized bed reactor (my emphasis) have not been disclosed. Thus whether or not the (reducing/carburizing) gas ratios or carbon and iron weight percentages are implicitly disclosed does not impact on the novelty of the opposed claims as a few key features are not disclosed in the citation. I do not find claims 1-23 of the opposed application as lacking in novelty in light of US 5,527,379.
AU 708326 (exhibit RHB-4)
This document discloses a process for producing iron carbide from iron oxide containing feedstock in a fluid bed reactor. The reduction of iron oxide to iron carbide is accomplished by action of a reactant gas comprising a reducing gas and a carburizing gas wherein the reactant gas is under a total gas pressure of at least 8 atmospheres and at a temperature in the range 550^oC to 650^oC. Another embodiment is also disclosed wherein two fluid bed reactors in series are used. In the first reactor conditions (gas temperatures and compositions) are set to favour aggressive reduction while in the second reactor conditions are set to favour aggressive carburization.
Looking at the first embodiment I note that the features of claims 1-12, 16-22, wherein reduction and carburization are carried out in separate zones within the same reactor (my emphasis) and the use of separate reducing and carburizing gas streams have not been disclosed.
Considering the second embodiment, it discloses a process where reduction is carried out in one reactor and carburization is carried out in another reactor. The invention of claim 13 defining multiple fluidized bed rectors wherein pre-heating and partial metallization are carried out in some of the reactors and final metallization and carburization is carried out in different zones in the final fluidized bed reactor (my emphasis) has not been disclosed. I note also that for both embodiments there is provided a single mixed reducing and carburizing gas feed whereas the opposed invention requires separate reducing and carburizing gas feeds.
Thus whether or not the (reducing/carburizing) gas ratios or carbon and iron weight percentages are implicitly disclosed does not impact on the novelty of the opposed claims as a few key features are not disclosed in the citation. I do not find claims 1-23 of the opposed application as lacking in novelty in light of AU 708326.
Inventive Step
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Application of this test in light of Subsections 7(2) and 7(3) of the Patents Act 1990, would require:
·     a determination of the problem sought to be solved by the opposed patent specification
·     a determination of the non-inventive worker in the field (or the person of ordinary skill in the relevant art) in Australia
·     a determination of the common general knowledge in Australia at the priority date (5 January 1994)
The problems of the prior art identified in the opposed specification relate to finding a fluidized bed process for converting metal oxides containing iron into iron carbide which produce an iron carbide product that:
·     produces briquettes which have acceptable structural strength without requiring the addition of a separate binder material
·     produces briquettes which are more easily transported and handled
·     produces briquettes which have acceptable density and breakdown index criteria
·     can be produced via a process wherein conversion from iron oxides to iron carbide is carried out in multiple fluidized bed reactors
·     can be produced via process wherein the iron reduction step is carried out separately from gas reforming and carburizing reactions
The problem lies in the area of iron carbide production from iron oxides. The hypothetical non-inventive skilled worker in the field would be a metallurgist/chemical engineer with specialist expertise in iron carbide production from iron oxides in fluidized bed reactors, and briquetting of iron carbide products.
The common general knowledge (hereinafter also referred to as cgk) relevant to the question of obviousness was described by Aickin J. in Minnesota Mining& Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
In order to determine the cgk in Australia I shall have regard to the submissions of the various declarants in this matter. I shall also have to consider their experience in the relevant art in Australia and whether that would provide them with the relevant cgk. I have indicated previously under “Lack of Fair Basis” that I found Dr Dam’s experience in the art did not qualify him as the non-inventive skilled addressee in the relevant art in Australia. Mr Stephens does have knowledge in the relevant art but he has not worked in Australia. I also note that he is an inventor for several patents in the relevant art. I cannot consider Mr Stephens to be the non-inventive skilled addressee in the relevant art in Australia. Therefore I have borne these factors in mind when considering the evidence of Dr Dam and Mr Stephens on inventive step. Dr Burgess has wide ranging experience in the Australian environment. The applicant submitted that based on his Curriculum Vitae, Dr Burgess does not appear to have had any direct experience with the production of iron carbide from iron oxide materials, such as haematite and magnetite. Dr Burgess has extensive experience in the field of metallurgy as indicated in his declaration. He states that he has conducted/managed research in the fields of iron making, steelmaking, continuous casting and non-ferrous metallurgy for the period 1976-1983, 1986-1992. At university (1983-1986) his research interests included gas-solid fluidisation and two-phase gas liquid dispersions. In 1992-1993 he provided advice and assessment of new iron and steelmaking technologies to senior management of BHP Steel particularly in the area of steel thin strip casting. From 1996-2001 Dr Burgess held executive/managerial positions which did not show direct connections to the production of iron carbide and briquetting thereof. Based on the evidence before me I consider Dr Burgess to possess sufficient experience in the field to comment on and identify the background art constituting the cgk in Australia. His statement regarding the cgk in Australia at the relevant date was not seriously challenged and the applicant’s declarant agreed that the cgk identified was known to him (but not necessarily in Australia). For the purposes of determination of lack of inventive step I shall consider the list of features identified by Dr Burgess as constituting the cgk in Australia. I note that these features are fairly general in nature and I shall refer to them wherever necessary in my consideration of the ground of lack of inventive step.
The opponent has listed the documents they considered to be part of the cgk in the statement of grounds and particulars. Sixteen documents have been listed of which fourteen are patent documents and two are Journal Articles. In the matter of patent documents forming part of the cgk the Courts have indicated that, in general, as per General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at page 482,
"... it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge .."
However, as was stated in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at page 294:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. Examples are provided by Vidal Dyes Syndicate Ltd v Levinstein Ltd. (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtaulds Ltd. (1933) 50 RPC 259 at page 280"
The opponent has listed separate pieces of cgk and referred to their disclosure in fourteen patent documents and two journal articles.   Thus where multiple specifications refer to a piece of knowledge, this may be indicative of that knowledge being common general knowledge, especially when the applications are by different applicants. I note that in this case for eight of the fourteen patent documents Iron Carbide Holdings was the applicant or had the same inventors. Also the opponent referred to different combinations of patent documents to show that they disclosed a number of different pieces of cgk.   I do not consider that there is sufficient evidence to show that these documents formed part of the cgk in Australia.
Dr Burgess, the only Australian declarant, lists several pieces of cgk. These pieces of cgk listed have been reviewed by the applicant’s declarant, Dr. Dam who agrees that they are part of the cgk in the art. However the listed cgk does not direct/teach/suggest a process wherein reduction and carburization of iron oxides are carried out in the same reactor in two separate zones with separate reducing and carburizing gas feeds. Also multiple fluidized bed reactors, wherein pre-heating and partial metallization are carried out in some of the reactors and final metallization and carburization are carried out in different zones in the final fluidized bed reactor have not been taught by the cgk. Dr Burgess does refer to some patent documents but only for establishing what the prior art taught. Thus the only cgk I can consider is the list of features provided by Dr Burgess in his first declaration.
The opponent also stated that the opposed invention was obvious in light of RHB-7 and RHB-4 both on an individual basis and when taken in combination with the cgk. I consider that both these documents would have been ascertained, understood and regarded as relevant by the non-inventive skilled addressee as both documents deal with iron carbide production in fluidized beds from iron oxide containing materials.
The applicant submitted that the process claimed in the opposed application consisted of a combination of steps and features. They contended that disclosure of these features on an individual basis does not constitute disclosure of the combination. They relied on the teaching:
"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious." (Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1979-80) 144 CLR 253 at page 293)
The applicant submitted that the opponent had failed to demonstrate that the selection of integers of the process was obvious
US 5,527,379 (exhibit RHB-7)
US 5,527,379 discloses conversion of iron oxide to iron carbide in a two stage process. In the first stage a major part of the iron content of the charge is pre-reduced in a circulating fluidized bed system using a hot reducing gas in which the amount of reduced iron-containing solids circulated per hour is at least five times the weight of reduced iron-containing solids contained in the fluidized bed reactor. The reduced iron-containing solids from the first stage are supplied to a second stage conventional fluidized bed reactor wherein hot reducing gas is supplied as a fluidizing gas to remove the remaining oxygen content (reduction) and convert the iron content thereof to Fe₃C (carburization). In particular the features wherein reduction and carburization are carried out in separate zones within the same reactor and the use of separate reducing and carburizing gas streams have not been disclosed. When facing the problem of the prior art and having regard to the teaching of the citation, there are no directions or indications in the citation (suggesting an advantage to be gained or some substantial disadvantage avoided) that would lead the skilled addressee to:
·combine the operations of reduction and carburization in a single reactor but in separate zones and with separate reducing and carburizing gas feeds.
·carry out the process in multiple fluidized bed rectors wherein pre-heating and partial metallization are carried out in some of the reactors and final metallization and carburization is carried out in different zones (with separate reducing and carburizing gas feeds) in the final fluidized bed reactor.
Neither has the opponent shown that it would be obvious to carry out the steps set out above. Also the cgk listed by Dr. Burgess when combined with the teaching of the citation does not lead to the opposed invention. I do not find that the opposed invention is obvious in light of US 5,527,379 either singly or in combination with the cgk.
AU 708326 (exhibit RHB-4)

This document discloses a process for producing iron carbide from iron oxide containing feedstock in a fluid bed reactor. In one embodiment, the reduction of iron oxide to iron carbide is accomplished by action of a reactant gas comprising a reducing gas and a carburizing gas wherein the reactant gas is under a total gas pressure of at least 8 atmospheres and at a temperature in the range 550^oC to 650^oC. Another embodiment is also disclosed wherein two fluid bed reactors in series are used. In the first reactor conditions (gas temperatures and compositions) are set to favour aggressive reduction while in the second reactor conditions are set to favour aggressive carburization.
I note that the features wherein reduction and carburization are carried out in separate zones within the same reactor and the use of separate reducing and carburizing gas streams have not been disclosed. When facing the problem of the prior art and having regard to the teaching of the citation, there are no directions or indications in the citation (suggesting an advantage to be gained or some substantial disadvantage avoided) that would lead the skilled addressee to:
1. For the first embodiment: - change the operations of reduction and carburization in a single reactor to separate zones with separate gas feeds for reduction and carburization.
2. For the second embodiment:- combine the operations of reduction and carburization in a single reactor but in separate zones with separate gas feeds for reduction and carburization
Neither has the opponent shown that it would be obvious to carry out the steps set out above. Similarly there is no teaching for carrying out the process of embodiments 1 and 2 in multiple fluidized bed rectors wherein pre-heating and partial metallization are carried out in some of the reactors and final metallization and carburization is carried out in different zones (with separate reducing and carburizing gas feeds) in the final fluidized bed reactor. Further on combining the cgk identified by Dr. Burgess with the teachings of the citation there is no suggestion or teaching which leads to the opposed invention. I do not find that the opposed invention is obvious in light of AU 708326 either singly or in combination with the cgk.
CONCLUSION
The opponent pursued grounds of novelty, inventive step, section 40/fair basis and utility. The opponent has been unsuccessful on all grounds.
Unless the Commissioner is served with a notice of appeal within 28 days of the date of this decision, I direct that the application proceed to sealing.
COSTS
The applicant sought an award of costs in its favour. They submitted that the opponent had failed to establish any of the grounds of the opposition and hence a finding should be made in favour of the applicant.
The opponent sought an award of costs as following the event. They further requested that the Hearing Officer take the expenses of the independent expert (Dr. Burgess) into account. They cited Sterling Drug Inc v The Boots Company plc [1996] APO 13 as supporting their submission.
The opposition process allows for both parties to provide evidence in the form of statutory declarations from experts in the field. The delegate in Sterling Drug (supra) had stated:
“I conclude that the scale of costs can be varied to allow the recovery of costs reasonably and properly incurred, if the scale provides inadequate recompense.”
The delegate had then reviewed the circumstances of the case and concluded;
“…The only relevant matter is the reasonableness of any unusual expenses incurred by [the party]. There is no evidence that [the party] incurred any unusual expense in the course of the opposition, so I will not order a variation of the scale.”
In the present case the opponent has requested that the independent expert’s expenses be taken into account, but there is no indication/evidence of any unusual or extraordinary circumstance that would justify expenses out of the ordinary. The opponent has not provided any material to show that the case was exceptionally difficult to prosecute, or required special expertise over and above the normal requirements of a substantive opposition. There is no circumstance or situation that has been put before me which justifies a variation from the scale of costs.
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The opponent has been unsuccessful in this matter. Accordingly I award costs in accordance with Schedule 8 against the opponent Iron Carbide Holdings Ltd and in favour of the applicant Orinoco Iron, C.A.
Jacob Elijah
Delegate of the Commissioner of Patents
25 November 2004
Patent attorneys for the applicant : Lord & Company, Perth
Patent attorneys for the opponent : Watermark Patent & Trademark Attorneys, Perth